Herbalife International of America, Inc., a wholly owned subsidiary of Herbalife International, Inc. v. Triplece Ltda. c/o aldo andres castanieda gutierrez
Claim Number: FA0804001174429
Complainant is Herbalife International of America, Inc., a wholly
owned subsidiary of Herbalife International, Inc. (“Complainant”), represented by Susan
Hwang, California, USA.
Respondent is Triplece Ltda. c/o aldo andres castanieda
gutierrez (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <miherbalife.net>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2008.
On April 3, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <miherbalife.net> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April
18, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 2008
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@miherbalife.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <miherbalife.net> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <miherbalife.net> domain name.
3. Respondent registered and used the <miherbalife.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is engaged in the development, manufacture, promotion, distribution and sale of weight loss, nutritional and personal care products. Complainant uses its HERBALIFE mark to market these products to consumers and conduct business with its distributors. Complainant first registered its HERBALIFE mark with the USPTO on October 18, 1983 (Reg. No. 1,254,211). Complainant also registered its mark with Republica de Chile Departamento de Propiedad Industrial (the Chilean trademark authority) on August 4, 1999 (Reg. No. 532,507).
Respondent registered its <miherbalife.net> domain name on December 1, 2006. Respondent’s disputed domain name resolves to a website which offers services to Complainant’s independent distributors. Respondent offers these services for free for a six-month period and then charges the distributors for the services.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided the Panel with extrinsic proof of
the registration of its HERBALIFE mark with the USPTO and other governmental
authorities. The Panel finds this
evidence is sufficient to establish Complainant’s rights in its HERBALIFE mark
pursuant to Policy ¶ 4(a)(i). See
Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction); see also
Respondent’s <miherbalife.net> domain name fully
incorporates Complainant’s HERBALIFE mark with the mere additions of the
generic term “mi,” which is Spanish for “my” and the generic top-level domain
“.net.” The Panel finds the mere
additions of a generic term in Spanish and top-level domain do not sufficiently
distinguish Respondent’s disputed domain name from Complainant’s mark. Thus, Respondent’s disputed domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See AmericaOnline, Inc. v. CredoNIC.com, FA 432156 (Nat. Arb.
Forum March 2, 2005) (finding <icqespanol.com> is confusingly similar to
complainant’s ICQ mark because it merely adds the generic word “espanol,” the
Spanish-language word for “Spanish”); see
also Arthur Guinness Son & Co. (
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel
finds Complainant has presented a sufficient prima facie case to support its allegations. Respondent failed to submit a response in
these proceedings. Therefore, the Panel
may assume Respondent does not have rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record
and determine whether Respondent has rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption
that the complainant’s allegations are true unless clearly contradicted by the
evidence).
Respondent is using its disputed domain name to provide
services to Complainant’s independent distributors which are in direct
competition to Complainant’s services to its distributors. The Panel finds Respondent’s use of the
disputed domain name constitutes diversion and is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding
that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Additionally, the WHOIS information and record do not reflect that Respondent is commonly known by the <miherbalife.net> domain name. Respondent is listed as “Triplece ltda.” in the WHOIS information. Complainant alleges it has not authorized Respondent to use its mark in any manner. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name offers distributorship
services which directly compete with Complainant’s business. The Panel finds Respondent’s use constitutes
disruption and is evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003)
(“Respondent registered a domain name confusingly similar to Complainant's mark
to divert Internet users to a competitor's website. It is a reasonable
inference that Respondent's purpose of registration and use was to either
disrupt or create confusion for Complainant's business in bad faith pursuant to
Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent is using the website resolving from its confusingly
similar disputed domain name to provide Internet users with competing distributorship
services. Respondent advertises on its
website that after six-months Respondent charges for these services. Additionally, Respondent’s uses of
Complainant’s marks create a likelihood of confusion regarding Complainant’s
affiliation with the content resolving from the disputed domain name. The Panel finds Respondent is attempting to
profit from the goodwill associated with Complainant’s marks. Therefore, the Panel finds Respondent’s
actions constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <miherbalife.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 27, 2008
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